ZW USA, Inc. v. PWD Systems, LLC , 889 F.3d 441 ( 2018 )

United States Court of Appeals
For the Eighth Circuit
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No. 16-3999
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ZW USA, Inc., a California Company
lllllllllllllllllllll Plaintiff - Appellant
v.
PWD Systems, LLC, a Missouri Limited Liability Company
lllllllllllllllllllll Defendant - Appellee
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No. 16-4035
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ZW USA, Inc., a California Company
lllllllllllllllllllll Plaintiff - Appellee
v.
PWD Systems, LLC, a Missouri Limited Liability Company
lllllllllllllllllllll Defendant - Appellant
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Appeals from United States District Court
for the Eastern District of Missouri - St. Louis
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Submitted: December 14, 2017
Filed: April 26, 2018
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Before SMITH, Chief Judge, KELLY and ERICKSON, Circuit Judges.
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KELLY, Circuit Judge.
This case involves a trademark dispute between two companies that sell plastic
bags for picking up and disposing of dog droppings. ZW USA, Inc. entered the dog-
bag market first and registered the mark ONEPUL. PWD, LLC entered the market
after ZW under the trade name BagSpot. On its website, PWD uses the phrase “one-
pull” to describe some of its products. ZW sued PWD for infringement of its
ONEPUL trademark, and PWD countersued claiming that the ONEPUL trademark
is invalid. The district court granted summary judgment to PWD on the infringement
claim, and to ZW on the validity claim. Both parties appealed.
I. Background
ZW and PWD sell plastic bags that customers use to pick up after their dogs.
Both companies sell “wicket” bags (also called “header” bags). Like plastic grocery
bags, wicket bags are sold stacked on top of one another and connected to some sort
of header strip. Also like grocery bags, wicket bags are dispensed by tearing the bag
off the header strip. Wicket bags are designed to be dispensed one at a time, with a
single pull of the hand.
ZW, a California company, began selling bags first. ZW stands for “zero
waste.” At some point, ZW began using the marks “ONEPUL” and “SINGLPUL”
with its wicket bags. These marks, of course, are misspelled truncations of the
phrases “one-pull” and “single-pull.” In 2013, ZW applied for trademarks for
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ONEPUL and SINGLPUL, which the United States Patent and Trademark Office
(PTO) granted in 2014. The PTO did not ask ZW for proof that the marks had
acquired distinctiveness in the dog-bag marketplace. Since 2010, ZW has spent some
$1.5 million on advertising for all of its products; it is unclear what portion of that
sum was spent on advertising ONEPUL wicket bags.
PWD is a Missouri company that began selling wicket bags in 2012. It markets
its products under the trade name BagSpot, and competes with ZW for customers.
PWD’s website identifies its wicket bags using the phrases “one-pull” and “one pull.”
As part of its marketing strategy, PWD purchased the term “zerowaste” from Google
Adwords. As a result, when a person uses Google to search for “zerowaste,” PWD’s
site appears near the top of the results page.
ZW filed suit alleging infringement of its ONEPUL and SINGLPUL
trademarks. PWD countersued, claiming that both trademarks were invalid. At
summary judgment, the district court determined that, while PWD had not infringed
on ZW’s marks, PWD had not presented evidence sufficient to overcome the strong
presumption that ZW’s registered marks were valid. It therefore granted PWD
summary judgment on the infringement claim, and granted ZW summary judgment
on the validity claim. On appeal, the parties raise the same issues that were before
the district court. We address each in turn.
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II. Trademark Infringement
ZW contends that PWD’s description of its wicket bags as “one-pull”1 infringes
on its ONEPUL trademark.2 We review this claim de novo. Frosty Treats Inc. v.
Sony Computer Entm’t Am., Inc., 426 F.3d 1001, 1003 (8th Cir. 2005).
Trademarks are “any word, name, symbol, or device . . . used by a person . . .
to identify and distinguish his or her goods . . . from those manufactured or sold by
others.” 15 U.S.C. § 1127. The owner of “a registered mark . . . has a civil action
against anyone employing an imitation of it in commerce when ‘such use is likely to
cause confusion, or to cause mistake, or to deceive.’” KP Permanent Make-Up, Inc.
v. Lasting Impression I, Inc., 543 U.S. 111, 117 (2004) (quoting 15 U.S.C.
§ 1114(1)(a)). The plaintiff mark owner has the burden of “showing that the
defendant’s actual practice is likely to produce confusion in the minds of consumers
about the origin of the goods or services in question.” Id. (emphasis added).
To determine the likelihood of confusion, we evaluate six factors:
1
PWD argues that its use of the phrase “one-pull” was not a “use in commerce”
that would subject it to suit for infringement. See Sensient Techs. Corp. v.
SensoryEffects Flavor Co., 613 F.3d 754, 760 (8th Cir. 2010). We disagree. A mark
is “in use in commerce on goods when . . . it is placed in any manner on the goods . . .
or the displays associated therewith . . . .” 15 U.S.C. § 1127. PWD placed the phrase
“one-pull” prominently on the webpage describing the products in question.
Customers can order the bags from the same webpage. That is a use in commerce.
2
In its complaint, ZW also claimed that PWD had infringed its SINGLPUL
mark. But PWD’s website only uses the phrase “one-pull,” ZW presented no
evidence in the district court that PWD infringed its SINGLPUL mark, and ZW
makes no argument regarding its SINGLPUL mark on appeal. Accordingly, we
affirm the district court’s grant of summary judgment to PWD on the SINGLPUL
infringement claim. See Fed. R. App. P. 28(a)(8)(A).
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(1) the strength of the owner’s mark; (2) the similarity between the
owner’s mark and the alleged infringer’s mark; (3) the degree to which
the products compete with each other; (4) the alleged infringer’s intent
to “pass off” its goods as those of the trademark owner; (5) incidents of
actual confusion; and (6) the type of product, its costs and conditions of
purchase.
Co-Rect Prods., Inc. v. Marvy! Advert. Photography, Inc., 780 F.2d 1324, 1330 (8th
Cir. 1985) (citing SquirtCo v. Seven-Up Co., 628 F.2d 1086, 1091 (8th Cir. 1980)).
“These factors do not operate in a mathematically precise formula; rather, we use
them at the summary judgment stage as a guide to determine whether a reasonable
jury could find a likelihood of confusion.” Duluth News-Tribune v. Mesabi Publ’g
Co., 84 F.3d 1093, 1096 (8th Cir. 1996). Accordingly, “[f]actual disputes regarding
a single factor are insufficient to support the reversal of summary judgment unless
they tilt the entire balance in favor of such a finding.” Id. “When . . . a trademark
dispute centers on the proper interpretation to be given to the facts, rather than on the
facts themselves, summary disposition is appropriate.” Id. at 1099.
We start by examining the strength of the ONEPUL mark. “A strong and
distinctive” mark is “entitled to greater protection than a weak or commonplace one.”
SquirtCo, 628 F.2d at 1091. We have explained that “[t]wo relevant measurements
of a mark’s strength are its conceptual strength and its commercial strength.” Lovely
Skin, Inc. v. Ishtar Skin Care Prods., LLC, 745 F.3d 877, 888 (8th Cir. 2014).
ONEPUL is conceptually weak. It is, after all, little more than a misspelling of “one-
pull.”3 As to commercial strength, ZW submitted evidence that it had spent $1.5
3
ZW argues that the district court improperly ignored evidence that its
ONEPUL mark is inherently distinctive because the PTO registered the mark without
asking for a showing of secondary meaning. We have previously been skeptical of
similar arguments. See Lovely Skin, 745 F.3d at 887 n.4. But even assuming that the
PTO’s manner of registering the ONEPUL mark is relevant, it does little to bolster
ZW’s argument for conceptual strength because ONEPUL is still just a misspelling
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million on advertising since 2010. This is circumstantial evidence of commercial
strength, but says little about “minds of consumers,” which is the relevant unit of
analysis for likelihood of confusion. KP Permanent Make-Up, 543 U.S. at 117.
On the similarity factor, we consider “the impression that each mark in its
entirety is likely to have on a purchaser exercising the attention usually given by
purchasers of such products.” Duluth News-Tribune, 84 F.3d at 1097. We find clear
similarity between the ONEPUL mark and PWD’s use of the phrase “one-pull.” But
that does not end our analysis. “[O]therwise similar marks are not likely to be
confused when used in conjunction with [the] clearly displayed name of [the]
manufacturer.” Id. (citing Pignons S.A. de Mecanique de Precision v. Polaroid Corp.,
657 F.2d 482, 487 (1st Cir. 1981)). That is the case here: PWD’s “one-pull” bags are
sold from a website that prominently displays its trade name, BagSpot. ZW does not
contest this. Instead, ZW argues that the district court erred procedurally by requiring
expert testimony—which ZW did not present— on similarity. But that is not what
the district court did. The court merely explained that ZW could have offered expert
evidence to bolster its claim that ONEPUL and “one-pull” are similar.
As to the degree of competition between ZW and PWD’s wicket bags, we agree
with the district court that ZW and PWD compete in the market for dog-waste
disposal products, which renders confusion more likely. But see Kemp v. Bumble
Bee Seafoods, Inc., 398 F.3d 1049, 1056 (8th Cir. 2005) (“[D]irect competition is not
the only aspect of this inquiry (although a showing of direct competition may increase
the likelihood of confusion).”).
of the phrase “one-pull.” And even if it did support ZW’s argument, this would not
be enough to require reversal of summary judgment. Duluth News-Tribune, 84 F.3d
at 1096, 1099.
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We next consider the extent to which the alleged infringer attempts to “pass
off” its mark as that of the trademark owner. “While proof of bad intent is not
required for success in an infringement or unfair competition claim, ‘the absence of
such intent is a factor to be considered.’” Sensient Techs., 613 F.3d at 766 (quoting
Frosty Treats, 426 F.3d at 1008). We have explained that “[k]nowledge of another’s
product and an intent to compete with that product is not . . . equivalent to an
intent . . . to mislead and to cause consumer confusion.” Id. (quoting Luigino’s, Inc.
v. Stouffer Corp., 170 F.3d 827, 831 (8th Cir. 1999)). ZW cites two pieces of
evidence to show intent. First, it says that PWD was aware of the details of ZW’s
business because PWD’s founders are relatives of ZW’s principals. That is evidence
of knowledge only. Second, ZW cites PWD’s purchase of the Google Adword
“zerowaste” as evidence that PWD had bad intent. That might be relevant if we were
analyzing a “zerowaste” trademark, but the issue in this case is the likelihood of
confusion between ZW’s ONEPUL mark and PWD’s product description.
Accordingly, ZW has introduced only minimal evidence that PWD intended to do
anything but fairly compete with ZW in the dog-waste disposal industry.
On the “actual confusion” factor, we agree with the district court that ZW
introduced no evidence that any consumer had ever actually confused ZW’s ONEPUL
mark with PWD’s description of its “one-pull” bags.
Finally, we consider “the kind of product, its cost and the conditions of
purchase” to determine “whether the degree of care exercised by the purchaser can
eliminate the likelihood of confusion which would otherwise exist.” SquirtCo, 628
F.2d at 1091 (quoting Grotrian, Helfferich, Schulz, Th. Steinweg Nachf. v. Steinway
& Sons, 523 F.2d 1331, 1342 (2d Cir. 1975)). To do so, we stand “in the shoes of the
ordinary purchaser, buying under the normally prevalent conditions of the market and
giving the attention such purchasers usually give in buying that class of goods.” Gen.
Mills, Inc. v. Kellogg Co., 824 F.2d 622, 627 (8th Cir. 1987) (quotation omitted).
The evidence on this factor is minimal—it consists only of the parties’ websites and
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online distribution methods.4 Based on that evidence, it seems that an ordinary
consumer exercises minimal care when purchasing a low-cost, fungible product like
dog-waste disposal bags, even in bulk. See Kemp, 398 F.3d at 1055 (“There is
always less likelihood of confusion where goods are expensive and purchased after
careful consideration.” (quoting Astra Pharm. Prods., Inc. v. Beckman Instruments,
Inc., 718 F.2d 1201, 1206 (1st Cir. 1983))). But the fact that the parties sell their
respective products on different websites under different trade names cuts strongly
against a likelihood of confusion. See Duluth News-Tribune, 84 F.3d at 1099
(affirming summary judgment where “distribution methods ensure[d] that the vast
majority of ordinary purchasers [would] not be confused.”). And ZW makes no
argument to the contrary on appeal.
Taken as a whole, the evidence that ZW submitted at summary judgment
showed only that ZW and PWD were in competition with one another. And while
direct competition can increase the likelihood of confusion, see Kemp, 398 F.3d at
1056, ZW presented no evidence from which a jury could infer that consumers are
likely to confuse ZW’s ONEPUL wicket bags with PWD’s BagSpot “one-pull”
wicket bags. Accordingly, we affirm the district court’s grant of summary judgment
to PWD on the infringement claim.
III. Trademark Validity
We turn now to PWD’s counterclaim that ZW’s marks are invalid. Before
addressing the merits, we must determine the scope of PWD’s argument. Two of
4
ZW takes issue with the district court’s admission of Exhibit G, which
consisted of print-outs of the websites of third-party dog-bag retailers. ZW objects
that the exhibit is unauthenticated hearsay. But ZW’s argument has no bearing on its
infringement claim. The district court based its determination of non-infringement
on the websites of ZW and PWD, not third-party websites. The admissibility of
Exhibit G is relevant only to the validity of ZW’s ONEPUL mark.
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ZW’s registered marks were before the district court: SINGLPUL and ONEPUL. The
district court did not pass on the validity of the SINGLPUL mark and, on appeal,
PWD makes no affirmative argument as to that mark’s validity. Accordingly, we
consider the argument waived and express no opinion on the validity of ZW’s
SINGLPUL mark.
The district court determined that the ONEPUL mark was entitled to a strong
presumption of validity. The court then concluded that PWD had not presented
enough evidence to overcome that presumption, and granted summary judgment to
ZW. We review summary judgment de novo, and apply the same standards as the
district court. Frosty Treats, 426 F.3d at 1003.
In order to receive protection under the Lanham Act, a mark must be
distinctive—that is, it must uniquely identify a particular brand. Two Pesos, Inc. v.
Taco Cabana, Inc., 505 U.S. 763, 768 (1992). The PTO organizes marks using
categories of ascending distinctiveness: “(1) generic; (2) descriptive; (3) suggestive;
(4) arbitrary; or (5) fanciful.” Id. Suggestive, arbitrary, and fanciful marks are
inherently distinctive, and thus eligible for registry. See id. By definition, generic
and descriptive marks lack the requisite distinctiveness. Id. at 768–69. A generic
mark “refe[rs] to the genus of which the particular product is a species.” Id. at 768.
In other words, a generic mark “denotes the product rather than any of the brands of
the product.” Door Systems, Inc. v. Pro-Line Door Systems, Inc., 83 F.3d 169, 171
(7th Cir. 1996). A descriptive mark “conveys an ‘immediate idea of the ingredients,
qualities or characteristics of the goods.’” Frosty Treats, 426 F.3d at 1005 (quoting
Stuart Hall Co. v. Ampad Corp., 51 F.3d 780, 785–86 (8th Cir. 1995)). Descriptive
marks may only be placed on the Principal Register “if shown to have acquired a
secondary meaning.” Id.
The Lanham Act protects both registered and unregistered trademarks. See
Matal v. Tam, 137 S. Ct. 1744, 1752 (2017) (“[E]ven if a trademark is not federally
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registered, it may still be enforceable under § 43(a) of the Lanham Act, which creates
a federal cause of action for trademark infringement.”). In a trademark suit, whether
a mark is registered is important because it determines which party bears the burden
of persuasion. If the mark is not registered, the mark user bears the burden of
showing that the mark is protected by the Lanham Act. Zobmondo Entm’t, LLC v.
Falls Media, LLC, 602 F.3d 1108, 1113 (9th Cir. 2010); Bd. of Supervisors for
Louisiana State Univ. Agric. & Mech. Coll. v. Smack Apparel Co., 550 F.3d 465, 474
(5th Cir. 2008) (“To prevail on their trademark infringement claim, the plaintiffs
. . . must establish ownership in a legally [protectable] mark, and . . . they must show
infringement by demonstrating a likelihood of confusion.”). But if a mark is listed
on the PTO’s Principal Register, the party challenging the mark’s validity bears the
burden of showing the mark is not protected by the Lanham Act. Lovely Skin, 745
F.3d at 883.5 In this case, ZW’s ONEPUL mark was listed on the Principal Register,
so PWD bore the burden of showing it was not valid.
The Lanham Act also provides that owners of registered marks may use the
registration as evidence of the mark’s validity. 15 U.S.C. § 1115(a). The content of
that evidence depends on how the PTO registered the mark.6 We have explained that,
when the PTO registers a mark without asking the registrant to show the mark has
acquired secondary meaning, the registration is evidence that the mark is inherently
distinctive (i.e., suggestive, arbitrary, or fanciful). See Aromatique, Inc. v. Gold Seal,
Inc., 28 F.3d 863, 869 (8th Cir. 1994). In this case, it is undisputed that the PTO
registered ONEPUL without requiring ZW to show that it had acquired secondary
5
In this latter type of case—where the PTO has listed the mark on the Principal
Register—the placement of the burden on the challenging party is sometimes called
the “presumption of validity.” See Lovely Skin, 745 F.3d at 882–83.
6
The content of the evidence provided by a mark’s registration is also
sometimes called the “presumption of validity.” See Lovely Skin, 745 F.3d at 883.
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meaning. Accordingly, ZW’s registration certificate is evidence that the ONEPUL
mark is inherently distinctive.
The Lanham Act tells us what a mark’s registration means, but the ordinary
rules of civil procedure tell us what to do with that information. At summary
judgment, the evidence is viewed in the light most favorable to the nonmoving party
(here, mark owner ZW), and summary judgment is withheld if there are genuine
disputes of material fact. Fed. R. Civ. P. 56(a). The court considers the whole record,
and refrains from weighing the evidence or making credibility determinations.
Torgerson v. City of Rochester, 643 F.3d 1031, 1042 (8th Cir. 2011) (en banc).
In this case, PWD submitted evidence to show that ONEPUL was either
generic or descriptive without secondary meaning. On genericness, PWD submitted
printouts from several websites where competitors use the phrases “one pull” or
“one-pull” to describe their dog bags,7 which PWD contends establishes that “one-
pull” is just a type of dog bag. On descriptiveness, PWD submitted ZW’s product
descriptions to show that ONEPUL is a variant of the phrase “one-pull,” which PWD
argues immediately conveys the manner in which ZW’s bags are dispensed: with one
pull of the hand. ZW replied with its certificate of registration, and argued that the
PTO found ONEPUL to be inherently distinctive.
7
ZW argues that this evidence should not have been considered by the district
court because it is both hearsay and unauthenticated. We disagree. The printed
webpages are not hearsay because they are not offered to prove the truth of the matter
asserted. See Fed. R. Evid. 801(c)(2). That is, they are not offered to prove the fact
that ZW’s competitors’ bags can actually be dispensed with one pull. They are
offered to show the fact that certain of ZW’s competitors use the phrase “one-pull”
to describe their products. Moreover, there is nothing in the Rules of Evidence that
would prevent PWD from authenticating the webpages at trial. See Fed. R. Civ. P.
56(c)(2).
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Viewing the record as a whole, there is a fact dispute as to whether the
ONEPUL mark is generic or descriptive. On this record, the only way to grant ZW
summary judgment on PWD’s validity claims was to decide that ZW’s evidence was
stronger or more credible than PWD’s evidence. Such a determination is improper
at summary judgment, and must be left to the trier of fact. We must therefore reverse
the district court’s grant of summary judgment to ZW on the validity claims.8
IV. Conclusion
For the foregoing reasons, we affirm the district court’s judgment on
infringement, and reverse on validity. The case is remanded for proceedings
consistent with this opinion.
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8
The parties also dispute whether ONEPUL has acquired secondary meaning
in the relevant marketplace. The district court did not address this question, and we
likewise decline to do so.
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